Judicial Estoppel and Changing Claim Construction

by Dennis Crouch

Intel Corp. v. XMTT, Inc. (Fed. Cir. 2022)

Chief Judge Moore is known (1) for her keen ability to identify logical flaws in appellate arguments and (2) her willingness to use those flaws to quickly dispose of the appeal.  In this case, the court only needed a few lines to reject Intel’s appeal:

The Board adopted the claim construction for which Intel advocated. Yet, Intel now changes its position and advocates for a claim construction that is clearly inconsistent with its position before the Board. Intel is judicially estopped from raising this argument.


Although I don’t disagree with this holding, The court here does not walk through the principles of judicial estoppel in its decision.  Under the Supreme Court’s New Hampshire v. Maine precedent, we look for three markers:

  1. A party taking a position that is clearly inconsistent with its earlier position;
  2. The earlier position was accepted by the prior tribunal.
  3. The change in position would create some unfair advantage or detriment unless estopped.

Here, the court addresses the first two points, but not the third.  I wonder if a different waiver or forfeiture argument might have been more appropriate.

What was Intel thinking.  Its appellate strategy here appears strategic.  Intel’s real problem was in how the PTAB used the construction in determining whether the claimed elements were disclosed in the prior art.  A direct appeal of that issue is given deference on appeal based upon a substantial evidence standard; instead it took the route of seeking de novo review.

Note that this decision is in some tension with Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020)


2 thoughts on “Judicial Estoppel and Changing Claim Construction

  1. 2

    Here, it just looks like Intel is making new arguments on appeal. It argued one claim construction to the PTAB (which the PTAB adopted), and then argued on appeal that the PTAB should have adopted some new construction… at least as the opinion describes it. This seems a bit more like waiver or forfeiture than judicial estoppel, but the label doesn’t matter much.

    That said, I think I’d need to see the briefs to make sense of this opinion. The second paragraph says the Board adopted Intel’s claim construction. The third paragraph says Intel is complaining about inadequate opportunity to address the Board’s construction, which doesn’t make a lot of sense. If the Board’s construction is Intel’s construction, then presumably Intel addressed that in its petition and reply.

    As this post suggests, it sounds like the Board may have agreed with Intel’s construction, but then come up with its own view of what follows from that construction.

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